1 Trademarks Summary 2004 What is a Trademark? A mark does not reward creative effort – rather it is a function of how it is perceived in the public, in a commercial context. A mark identifies the source of the wares – distinguishes it from other sources (manufacturers). Marks exist at common law but there is also a statutory basis – the Trademark Act which involves a registration process. The statutory regime does not displace the common law protection. The distinctiveness of the mark (its ability to distinguish source) is a feature common to both systems. “the question of trademark infringement is primarily one of the psychology – cognitive and behavioural – of consumers. A mark infringes when it is likely to cause a mental state of confusion in an appreciable number of consumers.” (Richard Kirkpatrick, in Jacoby). Landes & Trademark Law: An Economic Perspective Posner Maker X produces a product under Mark A; Maker Y produces the same kind of product and also calls it Mark A. This results in Y deriving benefit of the use of the mark – benefit is at expense of X. Trademarks reduce consumer search cost. The mark is a guarantee of certain characteristics of the wares to which it is attached. This principle of course pre-supposes that the law protects marks for the use of the manufacturers who create them. Trademarks also reduce communication and misunderstanding-avoidance costs. There may be monopoly concerns with trademarks. Consider that TM may have not only value as source identifiers but also as part of the language and as profitable commodities in their own rights. A mark may encourage rational consumption – it lowers search costs by communicating a lot of information in a short amount of time/space. The TM system also encourages manufacturers to invest in the quality of their product. But to what extent is the regime‟s benefits offset by the fact that consumers will pay more for product than its worth simply because of the mark itself – i.e. does the system foster irrational consumer behaviour? How does TM law interact with freedom of expression? Kozinski says that unless confusion can be shown, free public discourse should trump the trademark owner‟s control over its logo. Cohen notes the circular reasoning inherent in the trademark system. We afford protection to a mark because it has economic value, but it would have no value if we didn’t protect it. Passing Off Trader A markets goods in a manner that gives the impression he is Trader B, because B has an established market and reputation for instance – B will have an action against A, the tort of passing off. Classic Passing Off: o Trader A misrepresents himself as Trader B in the market. Note that the misrepresentation does not have to be intentional. There must be the possibility of harm suffered by B. o B may suffer: 1) diversion of sales; 2) loss of control over reputation in market. 2 Powell v. Birmingham Vinegar 1896 Passing Off Issue: Facts: P made sauce called Yorkshire Relish – very successful in sales. D also made sauce; sold in a bottle similar to P, with label that also similar. Sauce was different, but close. Decision: For the P. Ratio: Intention to misrepresent not necessary. Concern is that public will mistake D‟s goods for the P‟s. Yorkshire Relish still has descriptive force – that is, it has not yet entered the public domain (and therefore not deserving of protection). Extended Passing Off: o Where confusion goes beyond the source of two wares – where there is confusion with respect to different kinds of wares that are being represented as the same wares. Warnink v. Townend 1979 Extended Passing Off Issue: Is there an action when : P and D make different but similar products, and D is trading on the goodwill of the P‟s product but without using the mark of P? Facts: “Advocaat” is a drink made with eggs and spirits. P sell this drink and own most of the market. D are selling a drink made from eggs and wine (different from P‟s drink). They are selling the drink as Keeling‟s Old English Advocaat. There is nothing to indicate to the consumer that the D‟s product is made by P. Decision: For the P. Ratio: Diplock forms a 5 pronged test for passing off: o A misrepresentation must have been made. o It must have been made by the trader in the course trade. o It must have been made to prospective customers. o It must be reasonably foreseeable that the misrepresentation would cause damage. o A trader suffers actual damage as a result of the misrepresentation. The TM system is protecting against not only unfair use of the name but also against misrepresentations that depreciate the goodwill of the mark. o Must be concerned with effect passing off actions can have on competition. Institut National des Appellations 1990 Issue: Facts: D had been selling sparkling wine since the 1920s, under the name champagne. In 1956, everyone who sold champagne had to call it “Canadian Champagne.” Decision: Appeal dismissed. Ratio: D selling champagne under “Canadian Champagne” which had built up a reputation – unlikely to be confused with the original champagne from France. Cadbury Schweppes v. Pub Squash 1981 Confusion mediates the difference between competition and passing off. Issue: 3 Facts: P makes soft drink, Solo, marketed heavily. D releases Pub Squash into the market – some similarities with Solo. They were undeniably taking advantage of the marketing efforts of P. Decision: For the D. Ratio: Marketing themes of the P were merely descriptive, not an actual part of the product. To entitle P to protection of these themes would be to award a monopoly. Slogans, advertising etc will only be protected if they are part of the goodwill that gives the product its distinctive character. The key issue is whether the public would be confused. D does no wrong by entering the market and competing – it is difficult to draw the line (between competing and passing off) but if it is not drawn, competition will be stifled. The existence of confusion is a question of fact – need surveys, witnesses etc. Consumers Distributing v. Seiko 1984 Issue: Facts: ST is the authorized dealer of Seiko watches in Canada. CD sells Seiko – they were allowed to do so, not an “authorized dealer” but are selling the watches (legally) through another distributor. The watches being sold by CD are identical to those of ST, but lack the same warranty coverage. Decision: For CD. Ratio: It was held at the Court of Appeal that the product being sold is not just the watch but also the warranty etc. So CD is selling a product as that of ST but actually wasn‟t – classic passing off. The Supremes hold that competition should win out here – CD should be free to sell their product to the public – it can be assumed that because it comes with less warranty protection, the watch will be available at a lower price than what would be paid at ST – so there is no confusion here, public knows what they are getting. Reckitt and Colman Products v. Borden 1990 Relevant geographical area. Issue: Facts: P have been selling in UK, lemon juice in lemon shaped bottles for decades. D is selling similar bottles in US and Europe, but not in UK. Decision: For the P. Ratio: “Get-up” – known as the “distinguishing guise” in Canada: the way the product appears to the consumer. Have to show that the get-up has come to mean something to the public with respect to the source of the product. Lord Oliver sets out 3 steps for passing off: o P must establish good will or reputation in the mind of the public with respect to his goods or services. o There must be a misrepresentation that is likely to cause confusion in the mind of the public about the source of the product. o Must establish that the P has actually suffered damage. Won‟t protect a mark/get-up that is merely descriptive unless it can be shown to have acquired secondary meaning. Standard for consumer confusion is behaviour of the reasonable shopper in normal circumstances. The D will have to make changes to its product to avoid confusion with the product of the P – however this will be insufficient if it can be shown that people did think they were getting P‟s product when buying D‟s product. Are not protecting the P‟s bottle in and of itself, but the bottle in respect that it is used to sell lemon juice. At trial it had been held that some consumers would have been confused by the D‟s product, and would buy it thinking it were the product of P – the Lords cannot interfere with this finding, therefore the appeal is dismissed. Its not essential to a passing off action that the D should misrepresent his goods as the P‟s. It is sufficient that damage to P‟s goodwill or business is a reasonably foreseeable consequence of the misrep Note consumer interest is significant. Ciba-Geigy Canada Ltd. v. Apotex 1992 Issue: 4 Facts: P sells a drug under brand name Lopresor. D sell same drug using the same get-up as the P. A pharmacist can give D‟s drugs instead of P. Decision: Ratio: Note the public interest aspect of passing off actions. “get-up” means the whole visible external appearance of the goods in the form in which they are seen by the public before purchase. Who needs to be confused – the ultimate customer? Or the pharmacist? Patients are customers too – therefore we are concerned with their confusion as well as that of pharmacist. There may be no immediately recognizable harm should the customer receive the goods of a competitor instead of the manufacturer they wanted, but the court must recognize another form of harm in respecting the interests and rights of the consumer. Confusion: About What?? The most obvious answer is “source of the product.” But for extended passing off, the confusion could be with respect to the type or quality of the product, or a business association that does not exist. We will be concerned about confusion amongst a significant number of customers. The standard is that of the reasonable customer in the actual context the choice is made – must take the customer as you find him. Will apply to all customers, whether direct or indirect through the chain of commerce. Orkin Exterminating v. Pestco Co. 1985 Reputation Issue: Is P entitled to protection in Canada, when its reputation is chiefly in the US? Facts: Both P and D are in pest control business. P is an American company not operating in Canada. Has an excellent reputation as the result of years of competent and reliable work. They have advertised extensively in the US to distribute their brand. D are a Toronto pest control company who since 1967 or so have been using the name “Orkin” – but only as an entry in the phonebook to attract customers, D uses PestCo in all advertising etc. Decision: Appeal dismissed – for the plaintiff. Ratio: does P have to carry on business in area of D in order to have goodwill that is entitled to protection? And what damage would Orkin suffer if only Canadian customers are confused? Goodwill should not be defined narrowly – a business may have acquired a reputation somewhere despite never having done business there. Role of passing off action is to protect the community from the consequential damage of unfair competition or unfair trading. There may be many people in Canada who are aware of Orkin‟s reputation in the US (snowbirds for example). Also, what if Orkin planned to expand into Canada? Would the actions of the P hamper this? D using P‟s TM damages the goodwill of P. Ray Plastics v. Dustbane Products Ltd. 1994 Issue: Facts: Raywares made a combo snowbrush-ice scraper-squeegee implement. Concerned a get-up more than a mark exactly – the tool was uncommon in appearance and coloured black and yellow. Raywares undertook considerable advertising, and sales were good. D was asked by Canadian Tire to make a similar product. Decision: For the P. Ratio: The more distinctive a product the more easily one can establish reputation. o If a product has a novel or striking appearance it is easier to logical that there has come to be an association of that appearance with a single trade source. The D deliberately copied the product of the P – the court is swayed considerably by this – cite a US rule that states that deliberate copying creates a prima facie finding of secondary meaning. 5 W & H Ventures Ltd. v. Manitoba Lotteries Co. 1999 Issue: Facts: P run a restaurant called Michel‟s Bakery Café, it is located in a mall. D operate a restaurant in a casino called Michele‟s Restaurant. Motion for an injunction. Decision: For the D. Ratio: No existence of goodwill attached to services of P in the public mind associated with identifying name. No evidence of damage incurred by P, and court is not satisfied that any such damage is likely to occur – patronizing restaurant will have more to do with customers being in the associated venues. Kisber & Co. v. Ray Kisber & Associates Inc 1998 Where person’s name is mark, need evidence of secondary meaning. Issue: Is there secondary meaning in the name of the trader? Facts: P & D are brothers, both in the liquidation business. Both carry out extensive advertising. Decision: For the P. Ratio: Can use own name in trading, provided there is no confusion. Where mark is just a person‟s name must adduce evidence to show secondary meaning. Here, the P have established considerable reputation in the field of liquidation and the D are capitalizing on this reputation. Dissent: advertising budget is one indicator that can be taken into account in determining whether secondary meaning has been acquired. Lots of ads, but the effect on public of these ads has not been shown. Walt Disney Productions v. Fantasyland Hotel Inc. 1996 Issue: Facts: P has a Fantasyland in connection with its theme park; D operates Fantasyland Hotel, situated next to the West Edmonton Mall. Decision: For the D. Ratio: The P have goodwill associated with theme parks, but not with hotels. The goodwill earned through their wares does not extend to wares they do not trade in, or at large. So no passing off. Consider: is it necessary to show that the P has a reputation associated with the same type of wares as traded by the D? This case was decided on the basis of reputation, but it could have been decided on confusion? Disney can clearly establish reputation associated with its products. It is unlikely however that any confusion would arise. McCulloch v. Lewis A. May 1947 “Common field of activity” – line of reasoning since rejected. Issue: Facts: P is a broadcaster with the BBC – he took on the character “Uncle Mac” and had full control over a children‟s programme. D make food products – they want to sell “Uncle Mac‟s Puffed Wheat” cereal. Decision: For the D. 6 Ratio: There is no connection between the 2 parties to ground confusion – the P is not in the business of making breakfast cereals. Our 3 prong test does not include anything about “common activity”. As such, this decision did not last long. Harrods v. Harrodian School Ltd. 1996 Issue: Facts: P is the famous store in Knightsbridge. D operates a school. Decision: For the D. Ratio: The reputation acquired by the P is in the area of department stores. There does not necessarily need to be a common area of activity – but it is helpful in determining the likelihood of confusion. Where there is a household name the need for overlapping activity is less crucial. There is insufficient likelihood of confusion here. Visa International v. Visa Motel Co. Issue: Facts: P is Visa, the credit card folks. Their mark is the familiar logo. D are a motel company in Canada, also leases portable offices. They have a logo which has some similarities to the mark of the P. Decision: For the P. Ratio: Court refers to the statute, which holds that confusion can exist “whether or no such wares or services are of the same general class.” The differences in the mark are not enough to offset the confusing similarity. The D has misrepresented its goods as being associated with the P – P good will is likely to be injured. Trademark Act A registered TM is assumed to valid – this is significant, as in a common law passing off action, a P must establish goodwill and reputation attached to the mark. A registered TM is protected across the country – compare again to common law protection which extends only to where its reputation in the market can be shown. Some argue that the registration process makes a TM that much more like a piece of property. Registration increases the scope of protection afforded to a mark. Registration Process Must convince registrar your mark is in compliance with s. 30. o Mark has been used in association with these wares. o Include a picture of the mark (if pictorial in nature). o Statement that you believe you are the rightful owner of the mark. Under s. 37(1) – the registrar may refuse registration if he believes the mark does not conform with s. 30. S. 38 provides for opposition – within 2 months other parties may oppose the registration. If the issue is insubstantial it may be thrown out, but if there is an issue to be resolved, a hearing is conducted. S. 46 requires that registration be renewed. S. 16 where an applicant has filed an application in accordance with s. 30 to register a registerable mark that has been made known in Canada is entitled to secure registration of that mark unless it is confusing with; another mark made known in Canada; a TM for which someone had filed for registration; a trade name previously used in Canada. S. 12 – what will prevent a TM from being registered – 7 o A mark will not be registerable if it is primarily the name of a person who is living or has died in the past 30 years. o A TM that is not registerable because of ss 12(1)(a) and (b) may still be registerable under s. 12(2) if the mark has been used so as to be distinctive – that is, acquired secondary meaning. S. 20 - no registration prevents the bona fide use of your own name for business. Canada (Registrar of Trademarks) v. Coles 1972 Primarily a surname Issue: Facts: Applicant wishes to register Coles – refused because it is primarily a surname. Decision: For the registrar. Ratio: Trial judge said its not just a name, but rather has a dictionary meaning (cabbage). Coles was not merely a surname, but primarily surname when the “ordinary Canadian” test is used. The ordinary Canadian is more likely to think of the word as a surname rather than its dictionary definition (because of its obscurity). Galanos v. Registrar of Trademarks 1982 Issue: Is it primarily merely a surname? Facts: Registrar refused to register “Galanos” as a TM for the applicant‟s (toiletries, beauty) products because it is primarily merely a surname. Evidence to show that the name was quite rare. Also evidence to show that in Spanish “galanos” means “elegant,” “splendidly dressed.” Decision: For the applicant. Ratio: Shouldn‟t rule out a TM just because it is a surname. Need to ask, if it is a surname, is it primarily a surname – does it have other meaning? What is the average Canadian likely to think of when hearing the word? What about foreign words that have no meaning in English or French? It shouldn‟t be a bar to registration that the word is a coined word but can be traced to a foreign usage. The ordinary Canadian would be just as likely to think of the word as fanciful, coined or invented, as to think of it as a surname. Gerhard Horn Investments v. Registrar Issue: Can a fictitious name be registered? Facts: Mark in question is “Marco Pecci.” This is a fictional name, intended to capitalize on the cache accorded to European designers (the applicant makes women‟s clothing). Decision: For the applicant. Ratio: There is nothing in the Act that precludes the registration of a mark that is the name of a fictitious person. What will prevent the registration is if it can be shown that the name corresponds to an actual person – not whether the ordinary Canadian regards the mark as likely being a name of a person. S. 12(1)(b) – a mark cannot be registered under the Act if it is clearly descriptive or deceptively misdescriptive. Proctor & Gamble v. Nabisco Brands Issue: Facts: Applicant wanted to register “Mr Christies Crisp „n Chewy.” Decision: For the applicant. 8 Ratio: Can‟t register a mark if it is clearly descriptive or deceptively misdescriptive. The mark here is either clearly descriptive or deceptively misdescriptive. But the applicant has shown that a significant portion of the mark (“Christies”) has acquired distinctiveness so that the mark can distinguish the wares of the manufacturer from others. Deputy Attorney-General of Canada v. Biggs Laboratories 1964 Misleading the purchasing public. Issue: Facts: Applicant wanted to register TM “Shammi” in connected with a transparent polyethylene glove. Decision: For the opponent to the registration. Ratio: The glove has neither chamois nor shammy, so the TM request runs afoul of 7(d)(i) of the TMA, and of s. 12(1)(b) of the Act, which prohibits registration of TM that are deceptively misdescriptive. Atlantic Promotions v. Registrar of Trade Marks 1984 Issue: Is the requested mark deceptively misdescriptive? Facts: Applicant wanted to register TM that included the words “Milan shower gel” for use with soaps, detergent rinses. They are not made in Milan, so it is not clearly descriptive. Decision: For the Registrar (who denied registration). Ratio: The word “Milan” is disclaimed, which foregoes exclusive use of the word, but remains a consideration in determining confusion between marks – (s. 35 details disclaiming). Part of the mark is “Milan” written in fancy type – but it is still a word, and it must be determined if its use in the mark is misdescriptive. Test is whether the general public would be misled into thinking that the product with which the TM is associated had its origin in the place of a geographic name in the TM. “Milan” is a geographical name in the sense of it being the primary meaning of the word – and the public would think that this indicated the source of the wares, so it is therefore misdescriptive. Pepsi-Cola Co. v. Coca-Cola Co. 1940 Issue: is Coca-Cola a valid mark? Facts: P (Coke) brings action against D (Pepsi) claiming that the Pepsi mark is similar to the Coke one as to cause confusion. D challenges the registration of Coke‟s trademark, on the grounds it is merely descriptive. Decision: For the P. Ratio: D suggest that “Coca-Cola” is just descriptive of the ingredients, “coca” and “cola.” The words are descriptive but have been joined as a compound word, and written in a peculiar script – this may form the basis for a proper TM. P registered mark in 1905 and has been using it for 30 years – such delay and acquiescence that any doubt must be resolved in its favour. Default position is that something cannot be descriptive and distinctive – but it is possible for a mark to be both things. Create a new word with new meaning, plus the element of design – may be enough to create a valid mark. Home Juice Co. v. Orange Maison Issue: Is the respondent‟s mark clearly descriptive? 9 Facts: OM sells juice under “Orange Maison” mark, which is registered. They objected to the registration of a mark “Home Juice.” Home Juice folks moved to strike out the mark of OM because it is clearly descriptive in French of the character of the wares. Decision: For the appellants (“Home Juice”). Ratio: Must consider the languages “English and French” in their entirety, not just in the vocabulary of how they are spoken in Canada. First word is an elliptical description of the goods‟ character, and the second an explicit description of their quality (“maison” meaning house, but also “of good quality” in French). John Labatt v. Molson Co. 1987 Issue: Facts: Molson wants to register “Golden” as a TM for its beer. Registrar refused application on the grounds mark was “clearly descriptive.” Decision: Decision of the registrar restored. Ratio: “golden” has acquired distinctiveness which distorts the ordinary meaning of the word. But the word is still an adjective apt to describe one of the characteristics or qualities of beer, namely its colour. S. 12(1)(b) prevents the respondent from obtaining a monopoly in this word. S.C. Johnson & Son v. Marketing International 1979 Issue: Facts: P make Off! Insect repellent. Initiated TM infringement against Bugg Off. Decision: Appeal dismissed (for the defendants). Ratio: “off” is being used elliptically in association with an insect repellent, it is descriptive of the wares. P are claiming an exclusive proprietary right in relation to the word “off” as applied to an insect repellent. Consider the public-private spectrum; words which are simply the name of the wares associated with the mark, and words clearly descriptive of the mark will not be registerable (ss. 12(1)(b) and (c)). Marks that are suggestive may be registerable as they are not just descriptive. Under s. 12(2) a mark that would otherwise not be registerable under s. 12(1) may be registerable if it can be shown to have been so used in Canada by the applicant to have become distinctive. Abercrombie & Fitch v. Hunting World 1976 Issue: Facts: Both P and D run clothing/sporting goods stores. P (A & F) have used the mark “Safari” on its articles. They have registered marks for this use and have spent a lot of advertising $ promoting their wares identified with the “Safari” mark. D (HW) retailed in sporting wear identified by use of “Safari” and other modifications of the word. D filed a counterclaim – that safari is an ordinary, common, descriptive, geographic and generic word and not subject to exclusive appropriation as TM. Decision: Somewhat for the P. 10 Ratio: Categories of terms – ascending order of eligibility to TM status and according protection: Generic descriptive suggestive arbitrary or fanciful (“Ivory” is generic when referring to products made from elephant tusk, but arbitrary when referring to soap). Generic terms cannot be registered – a generic term is one that refers to the genus of which the particular product is a species. Descriptive terms may be afforded protection where secondary meaning can be shown. Suggestive terms require imagination, thought and perception to reach a conclusion as to the nature of goods – as opposed to a descriptive term which conveys an immediate idea of the ingredients, qualities or characteristics of the goods. Suggestive terms are entitled to protection without proof of secondary meaning. Fanciful or arbitrary terms enjoy rights all rights accorded to suggestive terms, without the need of debating whether the term is “merely descriptive.” Safari is a generic term when applied to certain kinds of American apparel, such as that made by A & F. But there is no evidence that safari is a generic term for boots – A & F uses safari on some of its boots. “When a plaintiff has chosen a mark with some descriptive qualities he cannot altogether exclude some kinds of competing uses even when the mark is properly on the register.” So HW is successful in claiming fair use in referring to some of its boots as “safari.” Some of the marks registered by A & F were struck out at a lower court – this should not have been done for some of them because the word “safari” is used in connection with these items arbitrarily and fancifully. Canadian Shredded Wheat v. Kellogg 1938 Issue: Was the term “Shredded Wheat” properly registered? Is it merely descriptive? Facts: P makes shredded wheat product – invented the process and had it patented, so enjoyed a monopoly. Decision: For the D. Ratio: Had P tried to register “Shredded Wheat” as TM just as their patent expired, they would have been refused. This would be just trying to extend the patent monopoly. If the TM is merely descriptive of the goods of which he is the only maker, then it is impossible for him to assert that this mark denotes his wares from that of another. The P asserts that the words comprising the mark have become distinctive of it as the manufacturer and are properly registerable as a TM. Where the words are common and purely descriptive of the wares it is very difficult to make out secondary meaning. The term “Shredded Wheat” is merely descriptive of the wares and does not indicate source. Carling Breweries v. Molson 1984 Issue: Can the mark be brought within s. 12(2)? Facts: Molson tried to register “Canadian” as TM. Carling opposes saying that the mark was not distinctive of goods, and that s. 12(2) was not satisfied. Registrar approved mark. Carling says that the mark is clearly descriptive. Decision: For the appellant – registration denied. Ratio: Mark is clearly descriptive – so can only be registered by s. 12(2), that it had acquired distinctiveness by the time of filing of application for registration. The onus in these instances is typically heavy. In this case Molson was not able to show acquired meaning. S. 12(1)(d) – a mark cannot be registered if it is confusing with a mark already on the register. Jacoby The Psychological Foundations of Trademark Law: Secondary Meaning, Genericism, Fame, Confusion, and Dilution Consumers develop cognitive networks in response to exposure to the outside world. Marks that our inherently distinctive require no showing of secondary meaning and merit the 11 highest level of protection. Fanciful and arbitrary marks are considered to be clearly IP and therefore deserving of protection. Elements of a products get-up may elicit a specific response in a consumer whereby they identify the source of the product – e.g. Reese‟s Peanut Butter Cups. The combination of certain shades of orange, yellow and brown are used by consumers to identify this product. It is not relevant whether the marks in this case are inherently distinctive or not – they have the immediate effect of identifying source. Picture a continuum with a “is characteristic of only one item” at one end and “could be characteristic of any item” at the opposite end. The poles correspond to “possesses secondary meaning” at one end, and “does not possess secondary meaning” at the other. If secondary meaning is at the left pole, then genericism is at the right. So the aforementioned characteristics of Reese‟s would be an example of something that has secondary meaning, so is at the left pole, while a product that has features like “has chocolate” and “is made from nuts” is more likely to call to the mind of the consumer any number of products and is therefore descriptive and possibly generic. S. 6 – TM is confusing with another TM if the use of the first TM would cause confusion with the last TM in the manner and circumstances described in this section. o (2) if the use of both TM in the same area would lead to the inference that the wares/services are manufactured, sold etc by the same person, whether or not they are the same general class. o (5) court will consider the following when determining whether TM is confusing: a) inherent distinctiveness of the TM and the extent to which they have become known. b) Length of time the TM have been in use. c) Nature of the wares, services, or business. d) Nature of the trade e) Degree of resemblance between the TMs in appearance or sound, or in the ideas suggested by them. Benson & Hedges v. St Regis Tobacco 1968 Issue: Facts: R wants to register “Golden Circlet” in association with cigarettes. A opposes because the TM would be confusing with its TM “Gold Band” registered in association with cigarettes. Decision: Appeal allowed. Ratio: Considers the suggestions in s. 6(5). Confusion likely – “a circlet is a kind of band.” Molson Companies v. John Labatt Ltd. 1994 Issue: Facts: Labatt wanted to register “Winchester Golden” – Molson opposed because the mark would be confusing with their “Molson Golden.” Decision: Appeal dismissed. Ratio: A TM has to be looked at as a whole, can‟t simply look at one of its elements, especially when that element is merely descriptive. Shouldn‟t break down marks into pieces and look at the bits that are similar and conclude that they are confusing. It is the combination of the elements that constitutes that TM and it is the effect of the mark as a whole that must be considered. “Golden” is merely descriptive, this should be borne in mind. There is no reasonable likelihood of confusion between the two marks here. 12 Weetabix of Canada v. Kellogg Canada 2002 Issue: Facts: Registrar refused application for registration of TM “Fruit Dots.” Kellogg‟s opposed the registration, alleging that “Fruit Dots” is confusing with “Froot Loops” – registrar agreed. Decision: Appeal dismissed. Ratio: Onus is on applicant to show that there is no confusion. Registrar held that the marks were not inherently distinctive, and not afforded a wide ambit of protection. It is unlikely the two marks would be confused. It was noted by the Court that the two marks co-existed in the US for many years – this mitigated the possibility of confusion in the Court‟s opinion. Lots of other cereals are in the marketplace that have similar marks (Fruit Rings, Fruit Whirls etc.). Marks and Fame Should fame have bearing on the scope of protection accorded to a mark? A weak mark is generic and descriptive; a strong mark is fanciful and arbitrary. A strong mark is less likely to need further protection from fame – a weak mark will benefit greatly from fame. What are the aspects of a mark that activate the associative networks in the mind of the consumer – recall the Jacoby article. Note the factors listed in s. 6(5) that are to be considered in determining if a mark is confusing with another: o a) inherent distinctiveness and the extent to which they have become known. o b) length of time the trademarks have been in use. Consider the competition aspect – a trader who has spent a lot of time building up reputation in a mark deserves to have that mark protected. A famous mark is going to be a likely target for “copycats” to benefit from that mark‟s reputation. o But what about the Schweppes case? Where it was held to be acceptable for a competitor to enter the market and compete – as long as there is no misrepresentation. Clearly these values are going to have to be balanced. McDonald’s Corp. v. Coffee Hut Stores Ltd. 1994 Issue: Facts: CHS want to register TM “McBeans” in association with coffee makers and accessories. McDonald‟s opposes. McDonald‟s opposed on the grounds that CHS was not the person entitled to register the TM in view of a likelihood of confusion with McDonald‟s family of TM (Mc*food*). Registrar refused CHS application in relation to the sale of coffee and tea and operation of a business dealing with sale of coffee and tea. McDonalds appealed the partial rejection of the application. Decision: Appeal dismissed. 13 Ratio: McDonald‟s as a TM is inherently weak (as is McBeans) although McDonald‟s has become extremely well known throughout Canada, and McBeans has some reputation in BC and AB. Can‟t examine the issue of confusion in a vacuum – must examine the way the TM are used in the course of business. Marks are not to be simply viewed side by side thereby encouraging a critical examination of every minute detail – must be compared as they are used in business and as they will be recalled by imperfect recollection. “In short, these are two very different kinds of businesses.” Insufficient evidence to show confusion b/w the marks. “Family of marks” – afforded wider ambit of protection? o Still need to have confusion – consumers would not necessarily be confused just because there is a similar prefix. o Registering a family of similar marks does not mean a trader can claim as his own a similar mark – monopoly concerns here. o Creating the family of names by joining Mac or Mc with nouns, verbs and adjectives can preclude the use of those prefixes as separate words either standing alone or in combination with other words. Miss Universe Inc. v. Bohna 1995 Issue: Facts: Applicant wanted to register “Miss Nude Universe” in Canada for use with women‟s clothing and a “beauty” pageant. Miss Universe – a US company opposed the registration because it would be confusing with the Miss Universe Mark. Opposition was upheld for wares, but not for services. Trial judge was persuaded by the vast difference in business in holding that there was little likelihood of confusion. With respect to distinctiveness – the word “Nude” in the middle of the applicant‟s trademark is of “arresting significance” and would convey a profound difference b/w the two contests – therefore the mark is distinctive. Decision: Appeal allowed (for the opponents). Ratio: It is not necessary that the parties operate in the same general field or industry or that the services be of the same type or quality to find a likelihood of confusion. The name “Miss Universe” is well known and reputable. Strong marks that are well known are to be afforded greater protection. Trial judge overemphasized the differences and failed to properly consider the similarities – both parties are using their marks in association with beauty pageants. Trial judge failed to give enough weight to the fame of the Miss Universe mark. There is a likelihood of confusion. To what extent is the justice here looking at association and not confusion? Are consumers really likely to be confused in fact? Also, the justice examines the issue of confusion assuming that the two businesses might operate in the same manner – this is speculative, we should concern ourselves with the manner in which the businesses are actually conducted. Consider the competition considerations here. 14 Pink Panther Beauty Corp. v. United Artists Corp. 1998 How far will TMA go to protect famous TM when those marks are used in relation to completely different wares or services? Issue: Facts: Respondent film co. owns 3 TM in relation to movies, the first being “The Pink Panther” the other 2 being pictures of the Pink Panther. Appellant sells beauty and hair care supplies under the name “Pink Panther” – they applied to register this name in association with its wares, and the respondent opposed. Registrar held there was no likelihood of confusion because of the difference b/w the goods & services, and the respondent hadn‟t shown enough of a reputation in Canada. Trial judge was persuaded by the fame of the respondent‟s mark and decided it was worthy of protection. Decision: Appeal allowed, return mark to registrar – not confusing. Ratio: Where do we draw the line b/w the right to copy and the right to compete? Strength of mark is important as is fame. When considering the nature of the goods and services, include not only general class of goods but the quality and price of goods – a more expensive item will be more carefully examined before purchase so less chance of confusion. In summarizing fame in TM law: “Fame is not everything, apparently. It is possible to use a famous mark for a different product in a different context without infringing.” “The Pink Panther” is a strong and famous mark. Test is likelihood of confusion, not possibility of confusion. The difference in wares is important here. Don‟t want to extend protection to every field of endeavour imaginable – Hollywood‟s marketing machine would control everything. Mark is not confusing. Have to accord a certain level of credit to the average consumer who isn‟t likely to think that the appellant‟s business is somehow associated with the Hollywood studio. Dissent: Majority did not give enough weight to the fame of the respondent‟s mark – clearly it is that fame that motivated the appellant to use the mark in the first place. By not protecting the mark in cases like these too much latitude is accorded to copycats who are trying to cash in on the creative fortune of others. The average consumer is likely to be confused to the extent that they believe there is an association with the wares of the appellant and the respondent‟s mark – that the products are being sold, approved by or endorsed by the respondent. Lexus Foods Inc. v. Toyota 2000 Issue: “Lexus” for use with canned fruit products confusion with Lexus used in connection with cars. Facts: Lexus foods wants to register their mark for use with canned foods. Toyota opposes; registrar said Toyota did not establish that it had a famous mark and there was no connection b/w the goods and services of the two parties. Trial court reversed this decision – Lexus is famous and there was likelihood of confusion. Decision: Appeal allowed (for the applicant). Ratio: Trial judge didn‟t follow Pink Panther, instead distinguishing on the basis that Lexus is a coined word, a “quality name” and was up and coming, at the beginning of famousness and deserves wider ambit of protection to preserve rising reputation. Must, however, give weight to the dramatically different areas of business – cars and canned food - “gaping divergence.” “There is either confusion or no confusion”; “there is no doctrine or mens rea in TM law” –a name is a “quality name” and this is why the applicant sought to use it – this doesn‟t factor into whether there was confusion, although it might be pertinent in an infringement action. No confusion here. 15 S. 9(1) – no person shall adopt in connection with a business as a TM or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, o (j) – any scandalous, obscene or immoral word or device; S. 12(1)(e) – a TM can‟t be registered if its adoption is prohibited by ss. 9 or 10. o Consider: if your mark is denied registration you can still use it in connection with your business – but “adopt” seems broader than “use” so s. 9 might suggest that you may not be able to use the mark at all. Found in the Miss Universe case that the mark was not immoral or obscene under s. 9 – “nude” is a perfectly acceptable adjective – public wouldn‟t view the mark as being scandalous, obscene or immoral. Also, we are considering the character of the mark, not of the activities of the applicant. In re In Over Our Heads Inc. 1990 Issue: Is the mark “Moonies” scandalous, obscene or immoral? Facts: Applicant wanted to register the name “Moonies” for dolls. The “oo” portion of the mark is a caricature of buttocks. Registration refused because the mark is disparaging to members of the Unification Church (known as “moonies”). Decision: Refusal to register is reversed. Ratio: “Moonies” as a term for the members of the sect is not derogatory. Most people would see the mark and perceive it to be referring to a doll that “moons” (drops its pants). Guidelines for determining whether a mark is scandalous or disparaging are vague, and determining such matters will be highly subjective. Better to resolve uncertainty in favour of the applicant – an offended group can oppose its registration, and bring evidence. Harjo et al. v. Pro. Football Inc. 1999 US Issue: Is the term “redskins” disparaging? Facts: Petitioners are Native Americans – want “redskins” marks‟ registration cancelled on the grounds that it is pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist designation for a Native American. Respondent says that the mark has acquired secondary meaning identifying the NFL (note that the Board said a secondary meaning establishment would not be a defence to the allegations of the petitioners, but that the pleadings of the respondent is not really a secondary meaning defence but rather an elaboration of the denial of the allegations of the petitioners). Decision: Registrations cancelled. Ratio: First look to the likely meaning of the matter and then look to see whether, in view of the likely meaning, the matter is scandalous to a substantial composite of the general public. Question of scandalousness or disparagement must be considered in relation to the goods or services identified by the mark. The targeted group must be determined on the basis of the facts in each case. “Redskins” refers to the respondent‟s football team and carries the allusion to Native Americans inherent in the original definition of that word. This is the “meaning of the matter.” “Redskins” may disparage Native Americans as perceived by a substantial composite of Native Americans. The petition to have the registrations cancelled is granted. While the registrations have been cancelled, the marks can still be used. In Canada however, the legislation in s. 9 says that such marks are not to be “adopted” which would seem to preclude use of the mark at all. However the Canadian legislation does not have a provision for “disparaging” marks which makes a successful s. 9 challenge narrower in scope. S. 9(1) o (k) – cannot adopt a mark in connection with a business any mark consisting of or so nearly resembling as to be likely to be mistaken for any matter that may falsely suggest a connection with any living individual. 16 o (l) – the portrait or signature of any individual who is living or dead or has died within the preceding 30 years. These provisions go beyond concerns of a mark‟s ability to indicate source – they protect individuals who may be affected by the use of the mark. S. 9(2)(a) – a mark may be registered that would otherwise not be able to be registered under the preceding provisions, if the person affected consents. Recall that s. 12(1)(a) makes a mark that is primarily the name of a person prima facie unregisterable. The mark can be saved by s. 12(2) by showing acquired secondary meaning. A mark the adoption of which is prohibited by ss. 9 or 10 is not registerable (s. 12(1)(e)). Carson v. Reynolds 1980 Issue: Facts: Respondent registered “Here‟s Johnny” in association with portable toilets. Johnny Carson opposed, and appeals the refusal of that opposition. Carson contends that the phrase is so identified with him that its use in association with anything is bound to lead to the conclusion in the public mind that the product is associated with him. Decision: Appeal allowed. Ratio: Evidence that most people think of Johnny Carson in reaction to the phrase “Here‟s Johnny.” The majority of the provisions in s. 9 are aimed the prohibition of commercial exploitation of a range of institutions. It is an absolute prohibition, not dependant upon proof of injury or damage. It is clear that “Here‟s Johnny” suggests a connection with the appellant, and so the mark would be confusing in association with anything else, no matter how remote the other thing was. Fawcett v. Linda Lingerie 1984 Issue: Is the applicant‟s mark registerable? Facts: Farrah Fawcett opposes the registration of “Fara” mark in association with ladies garments. Farrah opposes under s. 9(1)(k) in that it so nearly resembles the name of a living person that it is likely to falsely suggest a connection with Farrah; and under s. 16(3) that the applicant is not the person entitled to register the mark Decision: Opponent‟s opposition is rejected. Ratio: there is insufficient evidence to establish that the opponent‟s name is well known in Canada. Note that the statute doesn’t make an explicit requirement of fame – simply a living individual. But if the public isn’t aware of the existence of the person, then there can be no false impression of a connection between the goods or services and the individual. Jean Cacharel, S.A. v. Reitmans 1984 Issue: Facts: Reitmans wanted to register “Cashalaine” for use in association with women‟s garments. Opponent opposes on the grounds that the mark falsely suggests a connection with a living individual. Opponent uses the name “Jean Cacharel” which is a fictitious name, the name of the corporation that sells garments. Decision: Opposition rejected. Ratio: Not enough evidence to show that Jean Cacharel is well known in Canada. No average person is likely to be misled into thinking there was a connection b/w the living individual and the mark sought to be registered. Baron Phillipe de Reothschild S.A. v. Casa de Habana 1987 Issue: Facts: Applicant is a cigar merchant in Yorkville – used a sign “Rothschild at Yorkville” outside his shop. Decision: Injunction granted. Ratio: Improper use of the Rothschild name – tort of appropriation of personality. Ordered to take down the sign and not use the name any more. 17 The Right of Publicity McCarthy article discusses the “right of publicity.” This is the right of every person to control the commercial use of his or her identity. The right of publicity is an entirely separate legal right, aside from copyright and trademark law. There are limits to this of course with respect to freedom of speech. Jerry Rice can stop Nike from using his image to sell shoes, but he can‟t stop a newspaper writing about him. Courts essentially distinguish between commercial use of a personality which will be infringement without consent, and communicative use, which will be immune as fully protected free speech. The Rule Against Functionality There is a common law rule whereby a mark that is primarily functional in nature is not protected by TM law. S. 13 is understood to be an implicit affirmation of the common law rule. What‟s the rationale for this rule? The purpose of a TM is to identify source, and a utilitarian mark will not function to identify source. But must also consider the competition aspects – protecting a utilitarian mark may have the effect of stifling competition – almost like awarding a patent. Remington Rand Co. et al. v. Philips Electronics 1995 Issue: Facts: Philips has registered its triple-headed rotary electric head assembly. Remington wants to market a shaver using a similar apparatus, and applied unsuccessfully to have the Philips TM expunged – they appeal that decision. Decision: Appeal allowed – marks expunged. Ratio: Refers to Imperial Tobacco Co. v. Registrar; registration was sought for a cellophane outer wrapper for tobacco with a narrow coloured band. The coloured band was functional in nature, facilitating the removal of the wrapper – other manufacturers used the same thing, so it could not distinguish source, so not a valid TM. In Elgin Handles, the design accentuated in darker colouring the grain of the wood of tool handles which had been fire-hardened. It was held that the change in appearance due to wood hardening was secondary to the functional purpose of the process, therefore not a valid mark. In Pizza Pizza, the issue was whether a telephone number was registerable as a TM for a pizza take-out business. It was held by the registrar and at trial not to be a valid TM. On appeal, however, it was noted that the bar against registration of a functional mark exists where the marks were part of wares in respect of which registration was sought; registering these marks would effectively award patents on the wares. But in this case the mark (the phone number) while having a functional element, also operated to distinguish the wares of the applicant, having nothing to do with the actual wares of the applicant. They chose to use the number to distinguish their wares. What is determinative is the kind of functionality in question – if functionality is the mark itself (Imperial) or related to the wares (Elgin) then it is not registerable. But if the functionality is secondary or peripheral with no essential connection to the wares then it is a valid mark. A mark which goes beyond distinguishing the wares of its owner to the functional structure of the wares themselves is transgressing the legitimate bounds of a TM. Mennen v. Gillette 1991 Issue: Facts: Mennen wanted to register its distinguishing guise for deodorants – the container design. Its application was refused. Mennen appeals this decision. Decision: Appeal denied. 18 Ratio: The registrar had found that while the guise had some functional elements it was not exclusively functional, there were some aesthetic elements. The guise is weak – functional elements aren‟t protected so if a guise has a lot of functionality to it then it is weaker because once the functional elements are discounted then there is less remaining that can be distinctive. If a number of other traders use the functional elements then the guise is less effective at identifying source. s. 13 appears to protect competition in the marketplace. Balancing rights? Entitlement S. 16(1) – An applicant filing for registration of a TM that is registrable and that he has used or made known in Canada is entitled to secure the registration unless the mark is: o a) a TM used previously in Canada or made known in Canada; o b) a TM in respect of which an application had been previously filed; o c) a trade-name that had been previously used in Canada. S. 16(2) – covers marks registered and used abroad; same conditions as above. Entitlement can flow from registration and use in other parts of the world. So use in Canada is not necessary. The effective date is the filing date in Canada. S. 16(3) – entitled to register a proposed mark, subject to same above conditions. The first party to satisfy the requirements of s. 16, and gain entitlement is the first to own the mark. So it is not simply a race to registration. A TM will always be open to a challenge on entitlement. S. 18(1) – subject to s. 17, a registration of a TM is invalid if the party who registered was not the one entitled to do so. S. 17(1) – if another person had entitlement to a mark that has been registered, must still apply for registration, even if entitlement is established. Both parties rights to the mark will be balanced. Note the time limits in s. 17(2) – must commence proceedings to challenge a mark within 5 years, unless the person who adopted the registered mark knew of the previous us or making known. S. 4(1) – a TM is deemed to be used in association with wares if at the time of the transfer of the property in possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred. S. 5 – a TM is deemed to be made known in Canada if it is used in a country of the Union (the Union stems from the Paris Conventions, in which most countries are included – members of WTO), other than Canada, in association with the wares or services and o (a) the wares are distributed in association with it in Canada, or o (b) the wares or services are advertised in association with it in (i) any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or uses or the wares or services, or, (ii) radio broadcasts ordinarily received in Canada by potential dealers in or users of the wares or services, o and has become well know in Canada by reason of distribution or advertising. o So if you can establish use and making known overbroad this may be enough to ground entitlement in Canada. S. 14 – sets out the requirements in Canada for a mark registered overseas, notwithstanding s. 12. Essentially, must be not confusing with a mark in Canada, and have some distinctive character. Because distinctiveness is required, the enumerated factors in s. 12 will probably still have some relevance. 19 Proposed Use A great deal of time and resources may be devoted to developing a mark before knowing whether that mark will be registrable. S. 40(2) – when an application for registration of a proposed mark is allowed, the registrar will notify the applicant and register the mark after receiving a declaration that the use of the TM in Canada, in association with the wares or services specified in the application had been commenced by the applicant (or successor, or licensed entity). (3) – an application for a proposed mark will be considered abandoned if the registrar does not receive a declaration as mentioned above within: o (a) 6 months of the notice given by the registrar to the applicant, mentioned above; or o (b) 3 years after the date of filing the application. Example: A files for proposed use, then B begins using mark; A begins use, and notifies registrar (thus gaining registration) – A can bring action against B for infringement. But – should B gain distinctiveness in that time period, A may be unable to obtain registration by virtue of s. 18(1)(b) which precludes registration if the mark is not distinctive at the time of proceedings bringing validity into question are commenced; i.e. A‟s mark may be considered weak, because it does not effectively communicate source, because B has attained distinctiveness. Consider how these provisions interact with: o S. 16 – entitled to register unless the mark is confusing with another mark previously used or made known in Canada. o S. 37 – permits the registrar to refuse application for registration if the TM is not registrable or the applicant is not the person entitled to make the application. Lin Trading Co. v. CBM Co. 1988 Issue: Was LT entitled to register the Q & Q marks. Facts: CBM is a subsidiary of Citizen. CBM created “Q & Q” mark in 1976 and registered the mark in 60 countries including the US. 1980, CBM wants to enter Canadian market. CBM shipped a small sample of watches to a distributor in Toronto, but no distributorship agreement resulted. LT expressed interest in a distributorship agreement and took delivery of a small shipment of Q & Q watches from CBM, and subsequent larger shipments. Trial judge said that LT was not the person entitled to register the mark – they are trying to appropriate the property of CBM. Decision: Appeal dismissed (for CBM). Ratio: S. 16(1)(a) needs to be considered (can‟t register a mark that had been previously used or made known) and s. 4(1) (defines “use”). CBM contends that its first shipment of watches to the first distributor and subsequent shipments to LT constitute use of the mark in Canada. LT argues that this is not use “in the normal course of trade” and that the only use of the mark in Canada was when LT distributed the watches in stores in Canada. Sales in the “normal course of trade” does not mean that they have to have occurred throughout the entire chain of trade, ending with the ultimate consumer. When CBM sold watches to initial distributor and LT, it did so “in the normal course of trade” and resulted in the “use” by CBM of the Q & Q mark in Canada. Citrus Growers Association v. William Branson 1990 Issue: Facts: CGA and Jetco want to expunge the respondent‟s (Branson) registration of the mark “Ortanique.” CGA and Jetco are Jamaican companies exporting fruit, the ortanique being a orange-tangerine hybrid. Branson is a Canadian importer. CGA is the registered owner of the mark in several countries. CGA and JC claim that Branson was an agent and only able to register the mark on behalf of CGA, who is the only party entitled to register. Decision: Application granted. 20 Ratio: The applicant satisfies the definition of “use” in s. 4 since the fruit was marketed under its mark, “ortanique.” First use of the mark by the respondent was when they received their first shipment of ortaniques from the applicant. This constitutes “use” by the applicant not the respondent. “There is no doubt in my mind, Branson was acting on behalf of CGA Ltd., through Jetco, in importing goods covered by the mark.” So Branson breached a fiduciary duty when it registered the mark – it was acting as an agent for CGA and JC. Is “ortanique” registrable? It could be that it is descriptive, there is evidence that the fruit is known generally by this name, not exclusively to any one supplier or grower. Sequa Chemicals Inc. v. United Colour and Chemicals 1993 Token use or sale is not “in the normal course of trade.” Issue: Facts: Appellant‟s mark “Sunrez” was expunged. Respondent makes Sunrez, a paper-coating product, in the US. Appellant used to distribute Sunrez as made by the respondent, up until about 1985. Appellant submits that the trial judge erred in holding that the respondent was the person entitled to register the mark. Decision: Appeal allowed, expungement dismissed. Ratio: Court agrees with the general rule re: manufacturer and distributor; use of a mark by the distributor is “use” of the mark for the manufacturer. BUT in this case there is no evidence to support this particular rule. No evidence of use or sale of the mark Sunrez in Canada by the respondent other than token use or token sale. So token use or sale is not “in the normal course of trade.” Sunrez has been used by the appellant since 1985 – substantial volume of sales, and mark used and associated regularly and consistently with the appellant on its wares. British Petroleum Co. Ltd. v. Bombardier 1971 Issue: Facts: BP wanted to register “23 Skidoo” in association with motor oils. Bombardier opposed on the grounds that the mark was confusing with “Skidoo” which had been used in association with oil by B‟s predecessor in title, Castrol prior to BP‟s application for registration. Decision: Appeal allowed (for BP). Ratio: Registrar had focussed on confusion in denying registration. Court here also sees the issue as whether Castrol had used Skidoo as a mark. On the Castrol bottles of oil, the word “skidoo” appears on the container with a ® next to it, and a disclaimer that says “Ski-Doo TM is the property of Bombardier Snowmobile Limited.” The effect of these words in the court‟s opinion is that Castrol is saying – this is not our trade mark, and even though it appears on our product we are not using it as our TM. Thus, the use of the word skidoo by Castrol was not a TM use. Castrol had assigned its rights in TM skidoo to Bombardier, but since it has been decided that Castrol had acquired no such rights, the assignment meant nothing. S. 5 – A mark is deemed to be made known in Canada only if it used in a country of the Union other than Canada in association with wares or services, and: o (a) such wares are distributed in association with it in Canada, or o (b) such wares or services are advertised in association with it in (i) any printed publication circulated in Canada in the ordinary course of commerce among potential dealers or users of such wares, or (ii) radio broadcasts, ordinarily received by potential dealers in or users of such wares or services, and it has become well known in Canada by reasons of such distribution and advertising. 21 Robert C. Wian Enterprises Inc. v. Mady 1965 Issue: Facts: D run a restaurant in Windsor called “Big Boy Drive-In”, sells food including hamburgers – registered marks “Big Boy” and “Big Boy Drive-In.” P are Big Boy restaurants in the US and seek to have the D‟s marks expunged. Decision: Application dismissed. Ratio: P claims that the registrations are invalid by virtue of s. 18(1) because the D were not the persons entitled to register, under s. 16(1) – their marks are confusing with a mark previously made known in Canada. The P must show that their mark was made known in Canada prior to the registration of the D‟s mark – satisfy s. 5. No satisfactory evidence that the P advertised their wares in any publication that comes within s. 5(b)(i). Dodgy evidence with respect to becoming known as a result of the US radio broadcasts that were picked up in Canada – also there was no attempt to show that the marks were well known in all of Canada, just Windsor. So mark was not made known in Canada, s. 5 requirements not met. Valle’s Steak House v. Tessier et al 1980 Well known in “substantial part” of Canada. Issue: Facts: P operate chain of restaurants in US. P submitted in 1973 an application to register TM Valle‟s without having opened a restaurant in Canada. Registered mark using s. 14(1) – registered mark used outside the country is registrable if not confusing with a registered TM, and is not without distinctive character. D opened “Valle‟s Steak House Restaurant of Montreal.” They tried to register the name, but were refused because of s. 12(1)(a) (primarily a name) and confusing with a mark on the register. They withdrew their application and kept operating. Decision: For the plaintiff. Ratio: A foreign company even doing business abroad exclusively may none the less acquire rights in Canada and maintain them in Canadian courts as a Canadian company might do. Case hinges on whether the P had made its mark known in Canada under the meaning of s. 5. “Well known” means well known in a “substantial part” of Canada, not just within the boundaries of a locality (such as Windsor). But doesn‟t need to be “throughout the country” as described in Wian. Eastern provinces is enough in this case. P advertised its services in magazines, newspapers etc. and on a number of radio and television broadcasts received in Canada. Mere “spill over” of US marketing into Canada won‟t be enough – but here there was sufficient evidence. P made mark well known in Canada, so D was infringing. Expungement S. 57 – Federal Court, on the application of the Registrar or any interested person, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark. S. 18(1)(b) – registration is invalid if mark is not valid at the time proceedings bringing the validity of its registration into question are commenced. S. 18(2) – no registration of a mark that had been so used in Canada as to have become distinctive at the date of registration shall be held invalid merely on the ground that evidence of the distinctiveness was not submitted to the competent authority or tribunal before the grant of the registration. When bringing an action for infringement it is wise to also bring a passing off action in case the other party is successful in having your mark struck from the registrar. A mark must continue to carry out its purpose – when it is no longer distinctive of source it loses its protection – it is therefore important to exercise caution when allowing others to use your marks – 22 consider licensing situations. Also, mustn‟t be complacent in the presence of others using your mark without your permission. A mark that has lost distinctiveness may regain it. Aladdin Industries Inc. v. Canadian Thermos Products Inc. 1969 Issue: Facts: Applicant and respondent make vacuum bottles. Respondent owns TM “thermos.” Applicant brings an action to expunge “thermos” because it is generic and descriptive of vacuum bottles. Decision: Application dismissed. Ratio: August 17 1964 was the date of the originating notice of motion. This is the date at which it must be determined if the marks are generic and not distinctive and therefore invalid under s. 18(1)(b). Applicant adduced evidence to show that thermos was now used generically – lexicographers, dictionary definitions, catalogues etc. It is clear the respondent has made efforts over time to impress on the public that “Thermos” was its trademark, increasingly so over the past 30 years, as it became aware of the use of the word as a generic term. Court holds that much of the public is aware of the dual use and meaning of the word “thermos” as a generic term and as a TM. Evidence as a whole points to the use of the word generically and descriptively in day to day language, and in a distinctive sense in the trade, and to a lesser degree by the public when buying vacuum bottles. While the word is used in a descriptive sense, its not a merely descriptive word. It was a good TM when first registered. In the US a mark that has become public domain can still retain significance as a mark, to the extent that there is an appreciable minority segment of consumer public which knows, recognizes and uses the TM, mark will be protected. Notwithstanding the generic use of the word there was a substantial portion of the consumer public to whom the TM was distinctive. TM should not be found invalid under s. 18(1)(b). The applicant is at a disadvantage in not being able to use the generic term thermos in connection with his products. Is confusion likely if the marks were to be expunged? Vacuum flasks are cheap products so consumers are likely to exercise as much care in buying one as they would buying a car, for instance. Heinzman v. 751056 Ontario Ltd. 1990 Must maintain unity between mark and source; validity of the mark. Issue: Facts: Heinzman made nice pianos in Hanover, ON. At some point, they sold the company and now new companies sold pianos that weren‟t as nice from other countries, putting the Heinzman name on them. Decision: For the applicant. Ratio: New companies didn‟t inform the public of the change in manufacture but rather exploited the good reputation enjoyed by Henizman. So Heinzman mark lost its distinctiveness – no longer an indication of source. Mark was not distinctive at time proceedings commenced in which validity called into question – s. 18(1)(b). Abandonment In order for a mark to be struck out for abandonment: o It must be no longer in use in Canada, and, o There must have been an intention to abandon the mark. 23 Promafil Canada Ltée v. Munsingwear Inc. 1992 Issue: Facts: Appellant has a mark it uses on its clothing - a depiction of a penguin. The respondent is a French company that also used a penguin, in connection with wool and yarn. Appellant registered its mark. Respondent was planning on expanding the use of its mark to connection with clothing. Appellant opposed; the respondent brought action for expungement. Decision: Appeal allowed. Ratio: There is a thin and a fat penguin. Respondent argued that the appellant‟s current use of the fat penguin in stead of the thin penguin constitutes abandonment, so bring action for expungement under s. 18(1) under the grounds of lack of distinctiveness or abandonment. Trial judge held there was abandonment because, in his view, there were 2 separate designs and there was an intention to abandon. Do need to consider the visual impact of the mark; but focus not just on the differences, but on whether the owner of the mark had preserved the dominant features of the mark. Has the owner continued to use the mark in a manner that preserves its consumer recognition. While the mark has changed, the new one is simply a variation on the original – it maintains the dominant features. Canadian law can tolerate multiple variants of a mark. But with every variation the owner of the mark is “playing with fire” – risk losing distinctiveness. Non-Use S. 45 – if a mark has not been used in 3 years, it can be struck from the register. Any person, 3 years after the registration, who pays the fee can request that the Registrar give notice to the owner of the TM requiring them to furnish proof of use of the mark in Canada. So the owner has a chance to evidence use, or explain non-use. o If the evidence shows that the mark has not been used the mark can be struck from the register. Note that there is no intention requirement here, as with abandonment. This provision prevents companies from outlaying a great deal developing and registering a mark then never using it – “squatting.” Keeps the register clear, reduces possibility of confusion. Adams v. Société des Produits Nestlé 1996 Non-use Issue: Facts: Concerned s. 45 application to “Yorkie” mark in connection with confectionaries. We have an individual who imports these yummy chocolates from England to Canada, where they are distributed to retailers. Decision: Mark expunged. Ratio: In s. 45 applications, onus is on TM owner to show use – contrast with abandonment where party bringing the action must show non-use and intention to abandon. Test comes from Phillip Morris v. Imperial Tobacco – there must be use, even a single purchase, so long as it is a genuine commercial transaction in the normal course of trade. o S. 4 course of trade – manufacturer retailer/wholesaler consumer. If any part of the chain takes place in Canada then that is s. 4 use. We have sales of chocolate bars in association with “Yorkie” by the Canadian importer – this is use, but is it use by Société des Produits Nestlé? There are two TM owners identified on the wrapper, SdP Nestlé and Nestlé Rowntree, which is in England. Likely that Rowntree is the one exporting. This use, however, does not accrue to the registered owner (SdP) because it has not been identified as a licensed user. Evidence fails to show use of the mark by the registered owner. 24 What sort of excuse will satisfy a court as to non-use? From Lander, there must be special circumstances, beyond personal choice or decision based on what made economic sense at the time. The circumstances must be unusual, uncommon, exceptional. McCain Foods Ltd. v. Chef America 1996 Excuses for non-use Issue: Facts: McCain requested that the Registrar give s. 45 notice to Chef America. TM were registered by CA in association with foodstuffs, specifically “pocket” foods. Registrant had sold tons of the product in the US and had plans on expanding to Canada for a long time. Registrant presented lots of evidence of foundations being laid for expansion into Canada, but these plans were delayed by cost and “flavour” problems, and by the high demand for the product in the US. They opened a new plant in KY to meet supply demands; there was an earthquake destroying the plant in California, so the KY plant had to assume production for the US – so Canadian expansion delayed again. Then they had legal issues, dealing with infringement of their marks in the US. Decision: TM survives. Ratio: Factors to consider concerning non-use and special circumstances: o Length of time during which the TM has not been in use, o Whether the non-use was due to circumstances beyond TM owner‟s control, o Whether there exists a serious intention to shortly resume use. The circumstances were beyond the registrant‟s control, and there did appear to be a clear intention of launching the brand, so the registration sticks. The registrant is cautioned to start using the mark ASAP though. Licensing and Assignment These activities can create problems with respect to distinctiveness. Strictly speaking, licensing shouldn‟t be allowed – if the mark is supposed to distinguish source, it cannot do so if there is more than one source using the mark. S. 50 – if an entity is licensed by an owner of a TM to use the TM in that country, and the owner has, under the license, control of the character or quality of the wares or services, then the use, advertisement or display of the TM in that country as a TM by that entity is deemed to have had the same effect as a use, advertisement or display of the TM in that country by the owner. Assignment is essentially a transfer of the rights in a TM. Can‟t assign a mark territorially – i.e. use the mark in ON, and allow someone else to use it in QC – this is more akin to a licensing agreement. S. 48(1) – a TM whether registered or not, is transferable, either in connection with or separately from the goodwill of the business and in respect of either all or some of the wares or services in association with which it has been used. (2) – a TM may be held to be not distinctive if as a result of a transfer there subsisted rights in 2 or more persons to the use of confusing TMs and the rights were exercised by those persons. Consumers have to be able to discern between original owner and assignee. Transfer will be registered with the Registrar upon its receipt of certain info. Breck’s Sporting Goods v. Magder 1976 Assignment Issue: Facts: appellant imports lures from France with the TM “Mepps” as stamped on it by the manufacturer. The respondent sold “Mepps” lures in competition with the appellant and obtained the lures elsewhere than from the appellant or from Mepps. The appellant had brought an infringement action against the respondent. An American co. had obtained sole distributorship from Mepps in respect of their lures. The American company assigned TM rights to appellant‟s predecessor. Trial judge held that Mepps distinguished appellant. FCA held that the mark lacked distinctiveness within s. 2 and s. 18(1)(b). 25 Decision: Appeal dismissed. Ratio: Agrees with FCA decision. The mark doesn‟t distinguish the wares of the appellant from the French manufacturer or any other party. The appellants have not acquired the reputation in Canada associated with the lures. Zimmerman Trademark Licensing in Canada: Abandoning the Registered User Requirement in Favour of & Ericskson Quality Control Discusses licensing in Canadian TM law and corresponding jurisprudence in other jurisdictions. Senate bill that allows TM owners to enter into unregistered licensing arrangement without obtaining approval of the Registrar (incorporated into current Act). Control is the common denominator of the “source” and “quality assurance” theories of TM. Britain has a “source” theory of TM. TMs are protected to the extent that they provide information about the origin of the wares and services associated with the mark. If a mark was used by someone other than the owner then the public may be deceived. Marks have been expunged as a result of losing their distinctiveness through use by someone other than TM owner. The “source” theory has been recently criticized, on the basis of modern commercial realities and increased consumer sophistication. The consumer is less concerned with the owner of the marks on the goods they buy, or the owners of those marks. In the US, they have the “quality assurance” theory of TM. Based on the idea that consumers understand that wares and services cannot always originate from the same source, but that a TM is still an indicator of consistency of quality. To maintain TM‟s distinctiveness the licensor must retain sufficient control over the quality of the goods and services associated with the mark. “If a trademark owner allows licensees to depart from his quality standards, the public will be misled, and the trademark will cease to have utility as an informational device.” (KFC). Control is essential in TM licensing; o From the source theory perspective control ensures that there is a sufficient connection b/w the permitted user and the owner to attribute the use by the permitted user to the owner. o From the quality assurance theory perspective, control ensures that the wares and services of a permitted user meet the quality requirements of the owner of the mark. Current system in Canada requires potential licensors to gain approval of registrar to register users of their mark, ss. 50, 51. Object of the registered user provisions in the Act is to ensure that permitted use of the mark be subject to control by the TM owner, sufficient to secure the maintenance of the quality, kind and type of wares in association with the mark. The owner may exercise control over the user in a number of ways: o Permitted use of the TM restricted to wares as dictated by the owner. o Registered owner given right to inspect the wares and manner of manufacture. o Owner reserves the right to cancel the agreement if the provisions are not satisfied. There is some Canadian jurisprudence that suggests an adoption of the quality assurance theory of TM. Related companies are permitted to use TM owned by a parent or associated company without registration. Also, an unregistered license doesn‟t invalidate a TM if the 2 parties remain closely associated in the same general business endeavour. In Heintzman, the mark lost its distinctiveness because the respondent sold pianos obtained from sources other than those associated with the mark and the public was not notified that the source was not in fact the same. Control by the owner may ensure that the mark remains distinctive and worthy of protection. New Senate bill deems that use by a licensee is attributable to the owner of the TM if the onwer 26 has direct or indirect control of the character or quality of the wares. What is “control”? From a quality assurance perspective, control is product testing and enforcement of product specifications. From a source theory perspective, control would be related to the TM owner‟s participation in the use of the TM as opposed to the mere policing of licensees – so source theory requires more control than quality assurance? The new bill requires that a TM owner have control over the “character or quality” of the wares. There must be more than nominal quality control. If the licensed use deceives the public as to the origin of the goods, the court will not excuse such a use merely because the owner of the TM has reserved the right to inspect the goods or wares (American Greeting) – this emphasizes the prominence of the source theory of TM. It is clear that Canadian TM protection is based on distinctiveness and not mere quality control over the products associated with a particular mark. The TM owner must exercise control over the use of the mark, and not merely exercise control over the quality of the wares and services. Quality control is a means of ensuring that distinctiveness is retained – it does not automatically prove that distinctiveness exists. What’s the point of source theory though? Why does the consumer have an interest in knowing the source of the goods other than because they are concerned with the quality of those goods? Dynatech Automation Systems v. Dynatech Corp. 1995 Issue: Use of the TM deemed use by the owner? Facts: DA gave s. 45 notice to DC, registered owner of “Dynatech.” Dynatech registered in association with medical equipment, and engineering services. Decision: Marks expunged. Ratio: refers to s. 50; control merely by shared ownership does not satisfy s. 50. “The fact that the registrant can control the use by the licensee would not appear to be sufficient.” More than mere subsidiary and parent relationship is required to comply with s. 50. Need element of active control over quality and character wares – just being able to take away the use of the mark is not sufficient, in contemplation of s. 50. 27 Infringement S. 19 – subject to ss. 21, 32 and 67, the registration of a TM in respect of wares and services, unless shown to be invalid gives to the owner of the TM the exclusive right to the use throughout Canada of the TM in respect of those wares and services. o Note: this provision goes beyond the common law – there is no need to establish damage, reputation, just that you have a registered mark and someone else used it in association with the same wares or services. S. 20 (1) – the right of the TM owner to its exclusive use shall be deemed to be infringed by a person not entitled to its use under this Act who sells, distributes or advertises wares or services in association with a confusing TM or trade-name but no registration prevents a person from making o (a) any bona fide use of his personal name as trade name, or o (b) any bona fide use, other than as a TM, (i) of the geographical name of his place of business, or (ii) of any accurate description of the character or quality of his wares or services. o Note: goes further than s. 19; that provision requires the use of the same mark in connection with the same wares; s. 20 requires a confusing mark (which involves a consideration of the factors in s. 6(5)). o Marks should be compared as a whole, notwithstanding disclaimed elements. 28 o The relevant reaction is that of the average consumer, a reasonable person with imperfect recollection. o Must consider differences and similarities. o Evidence of confusion or lack thereof is relevant. o First step in defending your use of a mark/trade name is to attack the registration of the other party; then if unsuccessful, argue that your use is not infringing; e.g. wares are different, so s. 19 doesn‟t apply, it‟s not confusing so s. 20 doesn‟t apply, and so on. S. 21 (1) - concurrent use; where not contrary to public interest, a confusing mark may co-exist with a registered TM. Within a defined geographic area. Subject to terms court deems just. Adequately specified distinction from the registered mark. Confusing mark or trade name must have been used in good faith before the date of filing for registration. S. 22 (1) – No person shall use a TM registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto. (2) – in any action in respect of a use of a TM contrary to subsection (1) the court may decline to order the recovery of damages or profits and may permit the defendant to continue to sell wares marked with the TM that were in his possession or under his control at the time notice was given to him that the owner of the registered TM complained of the use of the TM. Pepsi-Cola Co. v. Coca-Cola Co. 1939 Issue: Facts: Coke claims that “Pepsi-Cola” is confusingly similar to the TM “Coca-Cola” and that its use by the D is infringement. Decision: Appeal allowed (no infringement). Ratio: Must consider “all the surrounding circumstances” and must consider what is likely to happen if each of the TMs are used in a normal way. Don‟t have to show, necessarily, injury to one party and/or illicit benefit to the other, just confusion, and registration should be refused. The burden on a P in an infringement action is to show reasonable probability of confusion (which, apparently, is more of a burden than that of the challenged applicant for registration, who must show the absence of all reasonable prospect of confusion). “The difference between the two compound words is apparent.” Impression is one of “contrast, rather than similarity.” The P cannot claim a monopoly in the word “cola.” Mr. Submarine v. Amandista Investments Ltd. 1987 Infringement Issue: Facts: appeal from judgment that dismissed appellant‟s action for infringement of 3 registered marks. P wanted injunction to prevent D using “Mr Subs‟n Pizza” – P owns TM “Mr Submarine” for use with sandwiches. D opened store in Dartmouth, NS, under above TM; his business was selling subs and pizza primarily through phone-in orders, which were delivered. P‟s business was walk in customers. P originally did not have any stores in NS, but opened one at around the same time the D started calling his business by the above name. P claims infringement. Decision: Appeal allowed. 29 Ratio: No s. 19 basis here, as the D has not taken the P‟s mark (“Mr Submarine”) as registered. P has right to exclusive use of mark throughout Canada, and is free to open more establishments and can engage in a telephone and delivery system such as employed by the D. So determining confusion requires having regard to P‟s present business and also whether confusion would be likely if the P were to operate in that are in any way open to it using its mark in association with the sandwiches and services. Consideration of factors in s. 6(5). o (a) distinctiveness of marks stems from the particular combination of two common and by themselves non-distinctive words. P‟s mark is very well known in TO, and ON, and to a lesser extent in the rest of Canada. D‟s mark is well known in Halifax-Dartmouth, but not really anywhere else. o (b) P‟s mark used since 1968, D‟s mark since 1976. o (c) nature of wares is the same with respect to sandwiches; but the D also sells pizza. Nature of the services rendered differs – walk-in as compared to phone-deliver service. o (d) restaurant setting as compared to home delivery setting. o (e) small degree of resemblance, but there is some, and it can‟t be ignored. The marks are confusing, so there‟s infringement. Bagagerie SA v. Bagagerie Willy Ltée 1992 Issue: Facts: Appellant owns 3 TM in which the words “la bagagerie” appear, in association with luggage, travel supplies etc. R has a store in Montreal called “La Bagerie Willy Ltée/Willy‟s Handbag and Repair Co.” Originally he just called it by the English name, but being in Quebec he had to comply with the language laws. He sells some luggage, none made by the A, and repairs luggage. Trial judge dismissed infringement action on the grounds there was no likelihood of confusion – the wares and services and nature of each party‟s business was completely different. Consumers would recognize the word “bagagerie” as a description of the wares sold. Decision: Appeal allowed (for the P). Ratio: Consideration of factors in s. 6(5): o (a) inherent distinctiveness of the marks is considerable. Distinction b/w the marks and trade name is minimal. o (b) A‟s marks been used in Canada since 1964, while the R‟s French name was given it in 1979. o (c) Very little difference in the types of goods, services or business. Trial judge attached a lot of weight to the intended clientele – A‟s goods were for rich folk, while R dealt with poor people. Not applicable here, says Court – where goods are more expensive, the consumer is more likely to examine and reflect therefore, less chance for confusion. But here, the difference in price of the goods is not terribly persuasive. o (d) little difference in the nature of the business. o (e) TM and trade name are very alike – the signage of the R just has the French component, so even more alike – confusion is likely. S. 20 defence – good faith use of the trade name (not as a TM) as a description of the wares – does bagagerie accurately describe the wares? Linguists testified on this matter – result is that baggage in everyday speech corresponds to suitcase containing effects; R sells empty suitcases. Evidence of lots of French language dictionaries that deleted entries of “bagagerie” as a common noun, at the request of the A. The phrase “La Bagagerie” was not descriptive of the articles sold by the R – they were at most suggestive. Not an accurate description within the meaning of s. 20(b)(ii). 30 Guccio Gucci S.p.A. v. Meubles Renel Inc 1992 Use of name as trade name. Issue: Facts: Paolo Gucci broke ranks in 1984 from the Gucci family to strike out as a designer, in furniture. At trial PG (the appellant) was enjoined from using TM “Paolo Gucci” and “Paolo Designed by Paolo Gucci.” Plaintiff, Gucci, brought infringement, passing off, depreciation of goodwill action against D for selling his Gucci stuff. Trial judge noted that the P‟s registrations aren‟t for use with furniture, so no s. 19 infringement. The party appealing here is a furniture store selling the Gucci stuff. Decision: Appeal dismissed (for the P). Ratio: To avoid s. 20, D contended he was using the mark as a trade name not a trade mark. Trial judge held that he couldn‟t make use of exceptions in s. 20 because he could find no evidence that D actually designed the furniture, and therefore the trade name wasn‟t descriptive of the wares. Four conditions to be met to avail oneself of the exception in s. 20(b)(ii) – the use must be: o (1) bona fide, o (2) other than as a TM, o (3) of an accurate description of the character of the wares or services, o (4) in such a manner as is not likely to have the effect of depreciating the value of the goodwill attaching to the TM. D fails on 3 out of the four (used as a TM, not accurate description, depreciates goodwill). Trial judge found that while the “Paolo…” mark wasn‟t a TM capable of registration its use as a TM is sufficient for the purpose of finding infringement under s. 20 – Court agrees. The adoption by a trader for the purpose of distinguishing his/her goods is the governing factor – Paolo was using the phrase to distinguish his goods, therefore using it as a TM. Use of the phrases was not an “accurate description of the character or quality” of the appellant‟s wares. Kayser-Roth Canada Inc. v. Fascination Lingerie 1971 Concurrent use under s. 21(1). Issue: Facts: P wants injunction restraining D from using mark “Fascination” in respect of lingerie. D‟s predecessor formed a clothing manufacturer in 1966 under the name Lingerie Fascination. 1n 1967 D‟s predecessor assigned rights to another who registered the firm in his own name. In 1969 the company was incorporated as Lingerie Fascination. P registered its mark in 1968. Decision: For the plaintiff. Ratio: P is the registered owner of the mark for lingerie and the D has clearly infringed – will have to rely on a defence. D tried to assert that its corporate name is the only name it can legally use under Quebec corporate law – this fails because of authority. D then contends that it that it is in good faith using its personal name, s. 20(a) – this fails, no authority to the effect that a corporate name is a personal name. Personal name means the name of an individual person. D argues for concurrent use under s. 21(1). This provision can only operate with respect to a TM that has the protection of s. 17(2). Marks protected by this provision must have been registered for more than 5 years and that the person who has adopted the in Canada the registered TM did not do so with the knowledge of such previous use or making of such trademark. The proceedings commenced within 5 years so aren‟t protected by s. 17(2). 31 Clairol International Corp. v. Thomas Supply & s. 22(1) – depreciation of goodwill. Equipment Co. 1968 Issue: Facts: P owns TM Miss Clairol – hair tinting and colouring. D make cosmetics – is a registered user of the TM “Revlon” and “Coloursilk.” D have advertising brochures for their colouring products – they contain the Revlon marks, but also include, in the printed matter, colour comparison charts featuring the P‟s marks. No sales damage as a result of the marketing of the D‟s product. P claims that the D‟s inclusion of their TM is “use” that depreciates goodwill within the meaning of s. 22(1) of the Act. Decision: D are in breach of s. 22(1). Ratio: The appearance of the P‟s TMs on the D‟s package is use within s. 4, on a clear reading. The presence of the P‟s TMs on the D‟s colour contrast brochures is not use within s. 4 because the brochures aren‟t the wares themselves, nor the packages in which the wares are distributed. S. 19 – confers exclusive right to the use of such mark in association with the wares or services for the purpose of distinguishing the wares or services as being those of the user of the TM. Any use that is not for the purpose of distinguishing the wares is not within the exclusive right conferred by s. 19. Here, in the brochures they are not using the P‟s mark as a TM. So s. 19 action fails. S. 22(1) – what are the limits? How does it apply? o No person shall use in association with wares within the meaning of s. 4 a mark that is used by another person for the purpose of distinguishing wares manufactured by him and which mark has been registered by him as his TM, in a manner likely to depreciate the value of the goodwill attaching thereto. Packaging – s. 4 use; brochures – no s. 4 use. So is the use on the package in a manner likely to depreciate goodwill? What‟s goodwill? o Element of the likelihood of consumer satisfaction with the goods purchased bearing the mark. o The effect of such persuasion to purchase the product as advertising may achieve, whether to attract new customers or to compel former customers to continue to use the goods bearing the mark. o “The whole advantage” of the “reputation and connection” which may have been built up by years of hard work or gained by lavish expenditure of money, and which is identified with the goods distributed by the owner in association with the mark. What does it mean to depreciate goodwill? o Reducing the advantage, to take away some portion of the custom otherwise expected. o Reduction of the esteem in which the mark itself is held or through the direct persuasion and enticing of customers who could otherwise be expected to buy or continue to buy goods bearing the mark. o He may not use his competitors TM for the purpose of appealing to his competitor‟s customers in his effort to weaken their habit of buying what they have brought before so they‟ll buy his wares. D are using the P‟s mark on their packaging in such a way as to depreciate their goodwill. Flyers with the competitors TM is not infringing under s. 22 because its not use under s. 4. Eye Masters v. Ross King Holdings Ltd 1992 o P wants interlocutory injunction to restrain D from referring to its TM in advertising. o Cites s. 4(2) which applies to services as opposed to wares in s. 4(1), as affording wider scope of protection to TM – TM is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services. o Judge notes that this is a slightly bizarre result, and the Act should be clarified with respect to this issue, but grants the injunction. 32 Future Shop Ltd. v. A. & B. Sound Ltd. 1994 s. 22(1) Issue: Facts: P apply for interlocutory injunction to restrain the D from referring to P‟s TM in competitive advertising. P claims violations of ss. 19 and 22(1) of the Act. Decision: Injunction denied. Ratio: It was noted in Clairol that s. 22 was not intended to forbid legitimate comparisons or criticisms of that kind. A comparative ad which by obvious and reasonable implication stresses the differences b/w the advertiser‟s goods and that of the competition does not attach itself to the goodwill in the same manner (as putting it on the package as in Clairol). S. 22 is offended when the use of a competitor‟s TM is for a purpose to stress the similarities – this attaches to the goodwill; s. 22 is not offended when the use of the TM is to stress the differences. Eye Masters was wrong. P doesn‟t have much of an argument because the advertising focuses on the differences; it is a strong enough argument to satisfy the fair issue to be tried test, but the injunction is denied due to the balance of convenience test. Source Perrier v. Fira-Less Marketing 1983 Anti-dilution laws trump free speech? Issue: Facts: P want an injunction restraining the D from infringing the rights of P in using its TM, from using the marks in a manner likely to depreciate goodwill. D distribute bottled water in “Pierre Eh!” in bottles like Perrier. Marketed as humorous political spoof aimed at Trudeau. Decision: Injunction granted. Ratio: It wouldn‟t be a spoof if it wasn‟t meant to cause confusion. There is a prima facie case for infringement here. Cites decision in which satirical uses of TM were held to be in violation of US anti-dilution laws. Freedom of expression argument is rejected – can‟t permit s. 2(b) to depreciate goodwill.
Pages to are hidden for
"Trademarks Summary 2004"Please download to view full document